Scott Daniels | April 26, 2011
At the end of February, we reported that Seagate had requested a third reexamination of Convolve’s U.S. Patent No. 6,314,473 claiming a noise reduction user interface in a disk drive: specifically, in “controlling one of seek time … and acoustic noise level … in inverse relation” (emphasis added). Although the patentability of the ‘473 claims had been confirmed in two previous reexaminations, it appeared that Seagate’s new request might succeed since it was based, at least in part, on assertions made by Convolve regarding the “heart of the invention” during the claim construction phase of parallel infringement action between the parties in Texas (2:08-cv-244).
Convolve’s Markman remarks, however, appear to have had no effect on the PTO’s analysis of whether the art cited in the new request presented “a substantial new question of patentability” (SNQ). First, the PTO determined that Convolve had written description support in a provisional application and was therefore entitled to claim priority to the filing date of that application. The result of that determination was that one reference, relied upon by Seagate for anticipation, was not prior art.
With respect to the two primary references asserted in Seagate’s proposed obviousness rejections, the PTO found that they might provide a general disclosure of “manipulating control settings in a servo test platform, but neither [touches] on the idea of specifically controlling seek time and seek acoustic noise level in inverse relationship” (emphasis added). The PTO added that a reference in the two earlier reexamination proceedings contained a disclosure similar to that of the two new references. The PTO dealt with the remaining references asserted in the request, finding that they failed to render the ‘473 invention obvious and contained no new disclosure not considered in the earlier proceedings. The PTO therefore denied Seagate’s request for reexamination.
The parties are now enmeshed in discovery battles in the Texas case.